Land Rush in Cyberspace

Beginning in 2010, the Internet Corporation of Assigned Names and Numbers (ICANN) is expected to create hundreds of new generic top-level domain names (gTLDs) and new country-code top-level domain names (ccTLDs).

This has the potential to transform the Internet, but also represents a potential sizeable headache for trademark holders of all types, as it will provide new territory for cyber-squatters to stake out.

The move was approved for implementation in June 2008 and immediately drew outrage from the intellectual property constituency. Their advocacy efforts led ICANN in March of this year to authorize the creation of an implementation resolution team tasked with developing proposed solutions for problems trademark holders are likely to experience with the introduction of more gTLDs and ccTLDs, such as securing the rights to the names themselves and resolving potential disputes among owners. These issues were further discussed at ICANN’s 35th Annual Public Meeting in June.

Despite ongoing controversy, the introduction is proceeding as planned, scheduled to begin in January. “They’re going forward with this; they’re going to implement it at some level,” said Jeff Whittle, partner in the intellectual property group of global law firm Bracewell & Giuliani LLP, which has published several articles on the subject. “If people still disagree with its implementation, there are ways they can communicate that to ICANN, but the big issue is to make sure people plan for it. They might want to adopt some level of these new generic top-level domain names when they become available to protect their company. Going forward, if you’re a current trademark owner, whether it’s worldwide or not, try to get trademark registrations and try to get them throughout the world, because it will help you in protecting your mark further.”

Whittle explained what the change will look like. “What they propose to do is open up additional [generic top-level domain names] that could be brand-specific domain extensions, such as a company’s name at dot-company name or at dot-geographic area,” he said. “They can also do things like dot-law [or] dot-software, and they’re expected to open up hundreds of these to the public to purchase. So if I went out and grabbed dot- McDonald’s before McDonald’s did, and my last name was McDonald or whatever the case is, in theory it would cost McDonald’s a lot of money to chase me down and find me and try to get that portion of the generic top-level domain back into their possession.”

ICANN has made efforts to get out in front of this problem. It has established procedures that allow trademark owners to register trademarks to a globally protected marks list, known as a GPML. This lists trademark registration owners as protected if they’re registered in at least one country within five geographic regions: North America, Latin America, Europe, Asia and Africa. According to Whittle, companies vary in their ability to exercise this right.

ICANN also created what’s known as a uniform rapid suspension system, under which domain names can be frozen for the life of a registration, so trademark register owners can have a way to freeze domain names while the resolution on a trademark issue is resolved.

“McDonald’s might be able to pull it off, but perhaps another famous brand like Firestone Tires, for example, might not be able to pull it off because maybe they are not registered in Africa, or in some other location like Latin America,” he said. “So if trademark owners don’t actively start pursuing registrations, they have a risk that other people will grab their generic top-level domain names – something that potentially will cause confusion or problems in the marketplace.”

So why is ICANN introducing these names? “It’s because there’s so much demand for the current top-level ones, especially the dot-com name,” Whittle said. “They’re hoping to open up more generic-level cyberspace. There were 109 to 110 million registrations through ICANN of the dot-com name and only about 2 percent of that was for dot-biz. Hardly anybody registers dot-biz anymore. And there’s the potential that this whole thing could just be a bust for ICANN because dot-biz was never widely accepted. But this is ICANN’s scheme for opening up cyberspace more to allow more cyber-traffic over the whole World Wide Web.”

According to Whittle, the biggest beneficiaries from the introduction of these new generic top-level domain names will be those active in social community networks. He said, “[On] Facebook and Twitter and the other [sites] where you have social networking going on, the new generic top-level domain names open up the ability for others to get in to and advertise and create sub-pages in the social space, and that’s a huge benefit for anybody who wants to create a secondary market in cyberspace, outside of the dot-com, to reach social communities particularly.”